CHAPTER § 3.04 Protecting Other Intellectual Property

• Jurisdiction: United States

§ 3.04 Protecting Other Intellectual Property

[1] Trademark Infringement

The elements for a trademark-infringement claim have been established under both federal and state case laws. A plaintiff in a trademark case has the burden of proving that the defendant's use of a mark has created a likelihood of confusion about the origin of the defendant's goods or services, i.e., the use of a trademark in connection with the sale of a good is likely to cause consumer confusion as to the source of those goods or as to the sponsorship or approval of such goods. In deciding whether consumers are likely to be confused, the courts will typically look to a number of factors, including:

i. the similarity in the overall impression created by the two marks (including the marks' look, phonetic similarities, and underlying meanings);
ii. the similarities of the goods and services involved (including an examination of the marketing channels for the goods);
iii. the strength of the plaintiff's mark;
iv. any evidence of actual confusion by consumers;
v. the intent of the defendant in adopting its mark;
vi. the physical proximity of the goods in the retail marketplace;
vii. the degree of care likely to be exercised by the consumer; and
viii. the likelihood of expansion of the product lines.³⁸²

The most common form of relief granted to a successful plaintiff in a trademark infringement lawsuit is an injunction. If the infringed mark was federally registered and the case is considered "exceptional," reasonable attorney's fees may also be available to a successful plaintiff.³⁸³ Under the Lanham Act,³⁸⁴ monetary damages are also available.

[2] Trademark Dilution

In addition to bringing an action for infringement, owners of trademarks can also bring an action for trademark dilution under either federal or state law. Under federal law, a dilution claim can be brought only if the mark is "famous." In deciding whether a mark is famous, the courts will look to the following factors: (1) the degree of inherent or acquired distinctiveness; (2) the duration and extent of use; (3) the amount of advertising and publicity; (4) the geographic extent of the market; (5) the channels of trade; (6) the degree of recognition in trading areas; (7) any use of similar marks by third parties; (8) whether the mark is registered.³⁸⁵ Under most state law, a mark need only to be "famous in the state."³⁸⁶

Once the prerequisites for a dilution claim are satisfied, the owner of a mark can bring an action...